Express Scripts, Inc. v. Anunet Pvt Ltd / Jyoti Mehta
Claim Number: FA1603001667318
Complainant is Express Scripts, Inc. (“Complainant”), represented by Arkadia Olson of HUSCH BLACKWELL LLP, Missouri, United States. Respondent is Anunet Pvt Ltd / Jyoti Mehta (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expressscrpts.com>, registered with Bizcn.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 24, 2016; the Forum received payment on March 24, 2016.
On March 27, 2016, Bizcn.com, Inc. confirmed by e-mail to the Forum that the <expressscrpts.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@expressscrpts.com. Also on March 28, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the EXPRESS SCRIPTS mark in connection with its business of providing a broad range of pharmacy services for patients, physicians, health plan sponsors and pharmaceutical manufacturers. Complainant registered the EXPRESS SCRIPTS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,809,555, registered December 7, 1993), which establishes rights in the mark. Respondent’s <expressscrpts.com> domain name is confusingly similar to the EXPRESS SCRIPTS mark as it merely removes the letter “i” from Complainant’s mark, eliminates the spacing between the words of Complainant’s mark, and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <expressscrpts.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial of fair use through the <expressscrpts.com> domain name. Rather, the domain name previously resolved to a website for a European pharmacy shop, which operates in the same market as Complainant. Currently, the domain name either relates to malware or resolves to an inactive page.
Respondent is using the <expressscrpts.com> domain name in bad faith. First, Respondent has been a party to at least six previous UDRP cases, wherein Respondent’s domains were transferred to the respective complainants. Second, Respondent’s past use of the website serves to disrupt and compete with Complainant’s business. Third, Respondent’s current use of the website either relates to malware or resolves to an inactive page, and violates Policy ¶ 4(a)(iii). Fourth, Respondent has engaged in the tactic of typosquatting. Lastly, Respondent had actual knowledge of the EXPRESS SCRIPTS mark at the time the disputed domain was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of
providing a broad range of pharmacy services for patients, physicians, health plan sponsors and pharmaceutical manufacturers.
2. Complainant registered the EXPRESS SCRIPTS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,809,555, registered December 7, 1993), establishing its rights in the mark.
3. Respondent registered the disputed <expressscrpts.com> domain name on November 18, 2004.
4. The disputed domain name formerly resolved to a website for a European pharmacy shop operating in the same market as Complainant. Currently, the domain name either relates to malware or resolves to an inactive page.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the EXPRESS SCRIPTS mark in connection with its business of providing a broad range of pharmacy services for patients, physicians, health plan sponsors, and pharmaceutical manufacturers. Complainant submits that it registered the EXPRESS SCRIPTS mark with the USPTO (Reg. No. 1,809,555, registered December 7, 1993), arguing such registrations demonstrate rights in its mark, even where Respondent operates in a different country. The Panel notes Attached Annex B for copies of Complainant’s USPTO registrations. Panels have found, under such circumstances, that a complainant’s valid USPTO registration is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i) and the Panel so finds in the present case. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The second issue that arises is whether the disputed <expressscrpts.com> domain name is identical or confusingly similar to Complainant’s EXPRESS SCRIPTS mark. Complainant argues that the domain name is confusingly similar to the EXPRESS SCRIPTS mark as it merely removes the letter “i” from Complainant’s mark, eliminates the spacing between the words of Complainant’s mark, and adds the gTLD “.com.” Panels have found such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Liberty Mutual Insurance Company v. Richard Jones, FA 1330673 (Nat. Arb. Forum July 23, 2010) (domain name libertymutuel.com, featuring misspelling of Complainant’s mark LIBERTY MUTUAL, found to be confusingly similar); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s <expressscrpts.com> domain name is confusingly similar to the EXPRESS SCRIPTS mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s EXPRESS SCRIPTS mark and to use it in its domain name, making only one minor spelling alteration to the mark which does not detract from the confusing similarity that is clearly present;
(b) Respondent registered the disputed domain name on November 18, 2004;
(c) The disputed domain name formerly resolved to a website for a European pharmacy shop operating in the same market as Complainant but currently either relates to malware or resolves to an inactive page;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <expressscrpts.com> domain name. Complainant submits that Respondent is not commonly known by the disputed domain name, nor did Complainant authorize Respondent to sell products or services on Complainant’s behalf. The Panel notes Complainant’s attached Annex A for the WHOIS information regarding the disputed domain name, listing “Anunet Pvt Ltd / Jyoti Mehta” as the registrant of record. The Panel also notes that Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence the Panel finds that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name);
(f) Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <expressscrpts.com> domain name. Rather, Complainant contends that in January 2016, the disputed domain name resolved to a European pharmacy shop, which directly competes with Complainant. See Compl., at attached Annex D (“European Pharmacy Shop”). Complainant also contends that the disputed domain name currently resolves to an inactive page. See Compl., at Attached Annex E (“Web Page Blocked”). Panels have held that neither a website offering competing products, nor an inactive website constitutes a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Therefore, the Panel finds that Respondent’s <expressscrpts.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and is using the <expressscrpts.com> domain name in bad faith. Specifically, Complainant submits that Respondent has been a party in at least six previous UDRP decisions, wherein the disputed domain names were transferred to the respective complainants in those cases. Complainant cites to the following cases on page 9 of the Complaint to support its argument: Alaska Air Group, Inc., and its subsidiary, Alasa Airlines v. Anunet Pvt Ltd / Jyoti Mehta, FA 1481995; Metropolitan Life Ins. Co. v. Anunet Pvt Ltd / Jyoti Mehta, FA 1406441; Allstate Insurance Company v. Anunet Pvt Ltd., D2011-0060. Panels have determined that a history of adverse UDRP findings constitutes bad faith registration and use under Policy ¶ 4(b)(i). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Accordingly, the Panel finds that Respondent has demonstrated bad faith pursuant to Policy ¶ 4(b)(i).
Secondly, Complainant contends that Respondent’s former use of the <expressscrpts.com> domain name to promote products and services that are in direct competition with Complainant’s business disrupts and competes with Complainant in violation of Policy ¶ 4(b)(iii). The Panel notes attached Annex D for screenshots of Respondent’s resolving webpages. Panels have agreed that a respondent’s use of a domain to divert Internet users to competitors of a complainant constitutes bad faith disruption under Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent’s past use of the <expressscrpts.com> domain name falls within the purview of Policy ¶ 4(b)(iii).
Thirdly, Complainant alleges that the current disputed domain name either relates to malware or resolves to an inactive page. Panels have held that neither a respondent’s use of a domain name to distribute malware, nor a respondent’s failure to make any active use of a disputed domain name constitutes bad faith registration and use per Policy ¶ 4(a)(iii). See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrated a respondent’s bad faith); see also Connections Academy, LLC v. bonjoosong, FA 1325725 (Nat. Arb. Forum July 29, 2010) (Respondent’s domain name does not resolve to an active website, which constitutes bad faith registration and use under Policy ¶ 4(a)(iii).). Therefore, the Panel finds that Respondent’s use of the <expressscrpts.com> domain name evinces bad faith use and registration under Policy ¶ 4(a)(iii).
Fourthly, Complainant also contends that Respondent’s typosquatting behavior is evidence of bad faith under Policy ¶ 4(a)(iii). Respondent’s <expressscrpts.com> domain name misspells Complainant’s EXPRESS SCRIPTS mark by removing the “i” from Complainant’s mark. Complainant contends that the misspelling was intentionally designed improperly to capitalize on Complainant’s mark and its related business. Panels have seen such actions as evidence of bad faith. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark). Accordingly, the Panel finds that Respondent has demonstrated bad faith under Policy ¶ 4(a)(iii).
Fifthly, Complainant contends that in light of the fame and notoriety of Complainant's EXPRESS SCRIPTS mark, it is inconceivable that Respondent could have registered the <expressscrpts.com> domain name without actual knowledge of Complainant's rights in the mark. Past panels have held that a respondent demonstrated bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Accordingly, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <expressscrpts.com> domain name using the EXPRESS SCRIPTS mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <expressscrpts.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC, Panelist
Dated: April 24, 2016
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